Archive for month: August, 2016

IP Australia has recently announced a significant change to the official fees payable for various IP rights in response to a review of the current fee structure. The aim of the fee changes is to simplify the current fee structure and to bring IP Australia into closer alignment with the practices of other international IP offices.

There are numerous fee changes, and we have summarised below some of the most significant changes that are most likely to have an impact on your clients’ patent and trade mark filings in Australia. Please note that the changes to design registration fees are minor in nature and only concern documentary requests and opposition fees.

When will the new fees commence?
The new fee structure will take effect as of 10 October 2016.

Trade marks fee changes

Lodgement fees
The lodgement fees for trade mark applications will be increasing as follows.

Trade mark applications filed using the official picklist of goods and services:
Current fees               New fees
$120 per class              $250 per class

Trade mark applications filed without using the official picklist of goods and services:
Current fees               New fees
$200 per class              $330 per class.

Series trade mark application filed using the official picklist of goods and services:
Current fees               New fees
$270 per class              $400 per class

Series trade mark application filed without using the official picklist of goods and services:
Current fees               New fees
$350 per class              $480 per class

Registration fees
The current trade mark registration fees of $300 per class will no longer be payable. This applies to all trade mark applications filed on or after 10 October 2016, and provides some relief for the increased filing fees. Importantly, the total official fees from lodgement through to registration will be lower than under the current fee structure.

Applications filed prior to 10 October 2016 and subsequently registered after this date will still be required to pay the $300 registration fee per class.

Renewal fees
Trade mark renewal fees will increase from $300 to $400 per class.

The new fees for late renewal of trade marks will be $100 per month per trade mark as opposed to the current $100 per month per class within the 6 month late renewal window.

Patent fee changes
Official filing fees for patent applications will be unchanged. The main area of change concerns renewal fees,which will increase as follows.

Patent renewal fees
Current fees               New fees
4^th to 9^th anniversaries              $300                            $300 (Unchanged)
10^th to 14^th anniversaries          $500                            $550
15^th to 19^th anniversaries          $1,120                         $1,250
20^th to 24^th anniversaries          $2,300                         $2,550

Possible strategies to consider

Trade marks
Trade marks can be renewed up to 12 months in advance of the renewal due date. As such, if you have clients with Australian trade marks due for renewal between 10 October 2016 and 10 October 2017, we recommend paying the renewal fee before 10 October 2016 to take advantage of the lower renewal fees.

Patents
IP Australia permits patent renewal fees to be paid in advance, effectively locking in one or more years of the remaining renewals at the current official fees. As such, for granted patents approaching the 10^th anniversary from the filing date, there will be significant short term cost savings achievable by paying one or more of the remaining renewals before 10 October 2016.

Please do not hesitate to contact us if you would like any further information, or if you would like to discuss how the fee changes affect a specific matter.

* Please note that all amounts quoted above are in Australian dollars.